Trademarking a domain name

[jaremo04]

Forgive me if I am asking a silly question ...

If I were to own a great domain name and someone decided to trademark the name (for whatever their purposes), would I be unable to use the name?

If so, what would keep someone from finding a highly-valued domain name and trademarking it for their purposes and profitability?

Thanks for any feedback.

 

[IRCCo Jeff]

Not at all, they would have to be using the name in such a manner that the two products would be confused as being similar. There are many companies using the name "Black Lotus" well after us and our attorneys have said there is nothing that can be done.

 

[bmugford]

Let's say you own the domain XYZ.com, a company can not just trademark XYZ after the domain is registered just to steal the domain. If that was true that would sure open up a can of worms.

 

[fogfever]

this is an interesting topic.
certainly black lotus is safe because you are using it as a company name and the UDRP considers that fair use... But, what if the business ended or you never had a business with that name and you just parked the domain. Would the domain then be at risk?

 

[jjvirus]

So If I registered a domain name where none in the world has trademarked the name, is it necessarily to trademark it for myself or it's completely safe with no trademark?

 

[CyberLaw.pro]

The situation you are describing, trademarking a name to attempt to collect a preexisting domain, is known as "reverse domain hijacking." Most of the time it doesn't work, but sometimes it does.

If you truly want to protect a name you should (1) develop it, and (2) trademark it. Nothing is guaranteed, but those two things are most likely to keep others away from your names.

 

[flamewalker]

Depends on usage. Usage is the golden egg... Parking will not protect you. If you build a brand/service with it, you can claim common law TM right if someone comes knocking.

Just owning a domain doesn't necessarily protect you, although prior reg does help a little. Someone could tm the term for a specific use, then you (i believe) would have to change the parking so it doesn't infringe. Safest thing is to start using it.

 

[IAmAllanShore]

This question gets asked a lot, and I usually post the exact text from WIPO's "selected views" of panelists, but here is the link with some information that anyone asking should find useful:
http://www.wipo.int/amc/en/domains/search/overview/index.html

Nothing better than straight from the horse's mouth when it comes to the UDRP/WIPO side of things.

-Allan :gl:

 

[weblord]

im not a legal person, but just want to help out.
i think you need to be first to trademark it.

Forgive me if I am asking a silly question ...

If I were to own a great domain name and someone decided to trademark the name (for whatever their purposes), would I be unable to use the name?

If so, what would keep someone from finding a highly-valued domain name and trademarking it for their purposes and profitability?

Thanks for any feedback.

 

[interestedenough]

I saw Villas.com sell on TDnam not long ago (it was at $30,000 when I last saw it; it probably went for much higher, but don't know how much), and the description said Villas-dot-com (or something similar) was trademarked. This caught my attention; anybody knows any more details about this domain and the strategy in the trademark.

 

[jjvirus]

Does USPTO trademark enough to protect a .com domain name or I need another one for Europe and for the rest of the world?

 

[Dave_Z]

Does USPTO trademark enough to protect a .com domain name or I need another one for Europe and for the rest of the world?

Only if you can afford it. :D

Like Eric said, it's not guaranteed. But having a trademark may likely keep 'em
away...

...until your domain name is found to infringe someone's mark, that is.

 

[bluesman]

Okay... so show the guy how to TM his domain name, already, guys!

:blink:

 

[onlinedomains00]

i know about the villas.com questions, I think the owner owns many of the tldcc of villa that the generic domain was of value, that they went ahead and trademarked it. Obiviously there are many valueable domains out there, but then there are some really good names, that are worth $xxxx range, and the TM process can be costly, for a domain with this value range, if you own 100 of them, you are basically TM to break even. It is very sad a few bad apples out there, are giving many domainers a bad name with cyber squatting, tdnam is horrible for this, they keep selling typo and TM names with high traffic stats suckering in newbies. ie) quictax.com sold for $54... last week saw samsungmonitors.com on tdnam expired auctions, newbies are getting caught up for all the wrong reasons not entirely their fault. All this just fueling the snowe bill, most domainers I have come across are really honest people, based on other industries I have dealt with, my dealings with domainers have been very reasonable, and fair.

 

[Freddie]

First you need a really good plan business, preferably developed or well advanced before a) registering a tm b) acquiring the domain name.

Do not fall into the trap of putting cart before the horse, or in other words writing the menu before you open the restuarant

Registering a tm through USTPO is time consuming unless you have the cash to employ a lawyer with expertise in the field.

just my two bobs worth

Freddie

:wave:

 

[gladdy]

As I understand to trademark domain you need to be a current owner of that domain.
You can't trademark domain you don't own.

 

[Dave_Z]

As I understand to trademark domain you need to be a current owner of that domain.
You can't trademark domain you don't own.

Sure would be nice if that's the case. But look up Y.com at USPTO and you'd
be surprised.

Heck, the mess.net registrant eventually secured a TM registration for mess.
com and tried to reverse-hijack it. Fortunately they didn't succeed.

Goes to show how bold some people are.

 

[DNQuest.com]

Okay... so show the guy how to TM his domain name, already, guys!

:blink:

Like any other TM, use it in commerce...